Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 9
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`Entered: July 20, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`WOMBAT SECURITY TECHNOLOGIES,
`Petitioner,
`
`v.
`
`PHISHME, INC.,
`Patent Owner.
`_______________
`
`Case PGR2017-00009
`Patent 9,398,038 B2
`_______________
`
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and
`BRIAN P. MURPHY, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71(d)
`
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`

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`PGR2017-00009
`Patent 9,398,038 B2
`
`
`SUMMARY
`Petitioner, Wombat Security Technologies, Inc., requests rehearing of
`the Board’s decision (Paper 7) (“Institution Decision”), entered June 8,
`2017, denying institution of inter partes review of U.S. Patent 9,398,038 B2
`(Ex. 1001) (“the ’038 patent”). Paper 8 (“Reh’g Req.”). For the reasons that
`follow, Petitioner’s request is denied.
`
`BACKGROUND
`In the Institution Decision, we found that Petitioner had not
`sufficiently shown that the ’038 patent was eligible for post-grant review.
`Inst. Dec. 8–13. Specifically, we found deficient Petitioner’s contention that
`the challenged claims were not entitled to the benefit of the filing date of
`Application No. 13/785,252 (“the ’252 application”) to which the ’038
`patent claims priority as a continuation-in-part. Inst. Dec. 8–13. This
`finding was based on the following deficiencies of the Petition: (1) the
`Petition did not discuss the relevant disclosure of the application to which
`the ’038 patent claims priority—Application No. 13/785,282 (“the ’252
`application”)—as originally filed, citing instead to the ’940 patent, which
`issued from the ’252 application; (2) the Petition did not address the
`Examiner’s statements in the Notice of Allowability that “[t]he present
`application is being examined under the pre-AIA first to invent provisions”;
`and (3) Petitioner did not satisfy its burden to show that a person of ordinary
`skill in the art would not have understood the inventor to have possession of
`“providing feedback to the individual confirming that the identified email
`was a simulated phishing attack” (“the feedback limitation”). Id. For the
`third deficiency, we found the feedback limitation supported by at least
`paragraphs 5 and 18 of the ’252 application, which discuss training
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`PGR2017-00009
`Patent 9,398,038 B2
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`individuals who receive simulated phishing attacks such that users are better
`able to recognize and thwart a real phishing attack. Id. at 11–12.
`According to Petitioner, none of these deficiencies “alone or together,
`constitute a sufficient reason to deny institution of the post-grant review.”
`Reh’g Req. 4.
`As explained below, we are not persuaded of error in at least the third
`identified deficiency—the finding that Petitioner did not satisfy its burden to
`show that a person of ordinary skill in the art would not have understood the
`inventor to have possession of the feedback limitation. As such, we deny
`Petitioner’s Request for Rehearing. We do not address, in this Decision, the
`two remaining deficiencies identified in the Institution Decision.
`
`DISCUSSION
`The applicable standard for granting a request for rehearing is abuse
`of discretion. 37 C.F.R. § 42.71(c). The requirements of a request for
`rehearing are set forth in 37 C.F.R. § 42.71(d), which provides in relevant
`part:
`
`A party dissatisfied with a decision may file a single request for
`rehearing without prior authorization from the Board. The
`burden of showing a decision should be modified lies with the
`party challenging the decision. The request must specifically
`identify all matters the party believes the Board misapprehended
`or overlooked, and the place where each matter was previously
`addressed in a motion, an opposition, or a reply.
`
`Petitioner argues that our finding that Petitioner had not sufficiently shown
`the ’038 patent to be eligible for post-grant review was “based upon an
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`PGR2017-00009
`Patent 9,398,038 B2
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`erroneous interpretation of the law and factual findings not supported by
`substantial evidence.” Reh’g Req. 1.
`Petitioner argues that by identifying the feedback limitation as not
`being recited expressly in the ’252 application it “satisf[ied] its burden to
`establish that it was more likely than not that the ’038 patent was not entitled
`to the filing date of the [’252 application].” Reh’g Req. 3. In Blue Calypso,
`LLC v. Groupon, Inc., however, the Federal Circuit explicitly found that
`identifying a limitation as not being recited expressly in the specification at
`issue was not enough to support a finding of lack of written description. 815
`F.3d 1331, 1345 (Fed. Cir. 2016). The Federal Circuit explained that it was
`“troubled by the fact that the Board did not cite any evidence other than the
`fact that the terms were not present in the specification to support its
`finding,” concluding this placed “undue weight on the absence of the [exact]
`terms appearing in the specification.” Id. at 1345–46. Petitioner’s burden,
`therefore, is not established simply by pointing out that the ’252 application
`does not explicitly state the feedback limitation.
`Petitioner further argues that we applied the wrong legal standard in
`making this determination. Reh’g Req. 7. According to Petitioner, because
`the Institution Decision agreed that the ’252 application does not disclose, in
`haec verba, the feedback limitation, the appropriate legal standard requires
`that that the feedback limitation “must necessarily be present” in the ’252
`application “such that one skilled in the art would recognize such a
`disclosure.” Id. at 7–8 (quoting Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159
`(Fed. Cir. 1998) (emphasis added by Petitioner)). According to Petitioner,
`we erred by not applying the “Tronzo standard,” which would require the
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`PGR2017-00009
`Patent 9,398,038 B2
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`’252 application to “‘necessarily’ disclose (as Tronzo requires) the claimed
`confirmatory feedback.” Id. at 9–10.
`We are not persuaded that we applied the wrong legal standard in the
`Institution Decision. The Federal Circuit has noted that its cases “have used
`varied language to express the test for determining whether a claim
`limitation added by amendment is inherent in the originally-filed
`specification.” ICN Photonics, Ltd. v. Cynosure, Inc., 73 Fed. Appx. 425,
`429 (2003). The Federal Circuit refers to Tronzo as providing one
`expression of that test. Id. However, the Court also points to cases that
`express the test as, (1) “one skilled in the art, reading the original disclosure,
`must immediately discern the limitation at issue in the claims,” and (2) “the
`disclosure need only reasonably convey to persons skilled in the art that the
`inventor had possession of the subject matter in question.” Id. (citing
`Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000)
`(emphasis added); Fujikawa v. Wattanasin, 93 F.3d 1559, 1570 (Fed. Cir.
`1996) (emphasis added)). Later, the entire Federal Circuit addressed the
`issue, holding the “[t]est for sufficiency [of written description of a patent
`specification] is whether the disclosure of the application relied upon
`reasonably conveys to those skilled in the art that the inventor had
`possession of the claimed subject matter as of the filing date.” Ariad
`Pharms, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
`banc). This is the standard we applied in the Institution Decision. See Inst.
`Dec. 11–13.
`Petitioner further contends that “[e]ven if it had applied the correct
`legal standard, the Board’s factual findings are not supported by substantial
`evidence.” Reh’g Req. 11. Petitioner explains that Patent Owner did not
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`PGR2017-00009
`Patent 9,398,038 B2
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`provide any evidence to support a finding that the ’038 patent provides
`adequate written description support for the feedback limitation. Id. at 11–
`12. On the other hand, according to Petitioner, its expert provided the only
`testimony on this issue. Id. at 12 (citing Ex. 1002 ¶¶ 70, 73). The Petition,
`however, does not rely on, nor refer to, expert testimony in the section
`relating to PGR eligibility. See Pet. 10–11. And Petitioner does not explain
`in its Request for Rehearing, where, in its Petition, it relied on this particular
`testimony.
`A request for rehearing is not an opportunity to present new evidence
`or argument. See 37 C.F.R. § 42.71(d). Petitioner cannot expect the Board
`to read through the entire record, searching for relevant evidence that might
`support Petitioner’s arguments. Cf., DeSilva v. DiLeonardi, 181 F.3d 865,
`866–67 (7th Cir 1999)(“[B]rief must make all arguments accessible to the
`judges, rather than ask them to play archaeologist with the record.”). The
`Petition simply fails to give sufficient notice to Patent Owner and the Board
`of the arguments and supporting evidence Petitioner sought to rely upon
`with respect to PGR eligibility.
`Upon review, the only portion of the Petition that appears to refer to
`this specific testimony is the section titled “Ground 3: The Original
`Specification Does Not Disclose a Plug-in that Provides Confirmatory
`Feedback to the Individual.” Pet. 28–30. Petitioner appears to acknowledge
`this deficiency, stating “Petitioner also supplied expert testimony from Prof.
`Avi Rubin on the merits of its invalidity challenges.” Reh’g Req. 3
`(emphasis added). Although Petitioner now explains that “[a] portion of
`Prof. Rubin’s testimony is directed to the newly claimed confirmatory
`feedback and, in particular, the manner that the confirmatory feedback must
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`PGR2017-00009
`Patent 9,398,038 B2
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`be provided” (id.), the Petition did not make any connection between this, or
`any other, testimony to the issue of PGR eligibility.
`Even assuming Petitioner provides sufficient notice of its reliance on
`Professor Rubin’s testimony for the issue of PGR eligibility, we are not
`persuaded that it supports Petitioner’s position. This testimony focuses on
`whether the forms of feedback disclosed by the ’038 patent—email and SMS
`messages—would have been provided by an email client plug-in. Ex. 1002
`¶¶ 70–73. The Petition’s discussion of eligibility does not make this
`argument. See Pet. 11. More importantly, in this testimony Professor Rubin
`opines on whether a person of ordinary skill would use an email client plug-
`in to send an email or SMS message to the client. Ex. 1002 ¶ 70:
`It is illogical and inefficient for an email client plug-in to send an
`email or SMS message to the client since the client-side plug-in
`is already at and running on the client computing device. Instead,
`it is more logical that an email client plug-in would provide the
`feedback by displaying a pop-up window or an alert message on
`the user’s computer screen.
`
`It is unclear how this testimony supports a finding that a person of ordinary
`skill in the art would not have understood the inventor of the ’252
`application to have possession of the feedback limitation. In fact, this
`testimony appears to support the opposite, that a person of ordinary skill in
`the art would have been familiar with the mechanics of providing user
`notification. We, therefore, do not agree with the contention that the only
`testimony on this issue supports Petitioner’s position on PGR eligibility.
`Petitioner also argues in its Request for Rehearing that the ’252
`application
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`PGR2017-00009
`Patent 9,398,038 B2
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`plainly does not disclose any of the specifics of: (i) providing
`feedback when the individual identifies a real (non-simulated)
`phishing attack (as required in claims 4, 14 and 24) (Petition at
`11); (ii) that the email client plug-in provides the confirmatory
`feedback (Petition at 28–30); or (iii) that the confirmatory
`feedback is provided in response to the comparison step (Petition
`at 19–29).
`
`Reh’g Req. 10 (emphasis in original). These are new arguments that were
`not presented in the Petition. Although Petitioner refers to pages in the
`Petition where these arguments were allegedly made, we are not persuaded
`that the Petition clearly set forth these arguments. In fact, the entirety of
`Petitioner’s argument about the effective filing date of the challenged claims
`is the following:
`Although the ’038 Patent claims priority to the both the ’252 and
`’538 Applications, its claims recite subject matter that is not
`disclosed in either of these priority applications. Specifically, the
`’038 Patent adds that the email recipient can receive feedback
`when he/she correctly identifies a phishing email, whether it is
`simulated or real. Ex. 1001, col. 1:65 - col. 2:3; col. 4:7-14; col.
`4:40-46; col. 7:49-64. This material is not included in the ’252
`or ’538 Applications (Exs. 1004-1005) but is included in every
`claim of the ’038 Patent. Each independent claim (claims 1, 11
`and 21) of the ’038 Patent recites that confirmatory feedback is
`provided when an individual identifies a known simulated
`phishing email. Accordingly, all the independent claims have
`subject matter that was first disclosed in the CIP application that
`eventually issued as the ’038 Patent ―the confirmatory feedback
`for identifying known simulated phishing emails. Therefore, the
`earliest possible filing date for all claims of the ’038 Patent is the
`date that the CIP application was filed, i.e., June 14, 2013.
`Because the effective filing date is after March 16, 2013, the ’038
`Patent is eligible for PGR. See Pub. L. No. 112-29 (Leahy-Smith
`America Invents Act) § 3(n)(1).
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`PGR2017-00009
`Patent 9,398,038 B2
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`Pet. 11. All the other pages in the Petition pointed to by Petitioner involve
`arguments supporting Petitioner’s proposed grounds. Pet. 19–30. The
`Petition does not identify these arguments as relevant to the question of PGR
`eligibility, an issue on which Petitioner has the burden. We are not
`persuaded that either Patent Owner or the Board is obligated to scour the
`Petition looking for arguments that may relate to the issue of PGR eligibility,
`but that are not identified as such. Thus, these arguments do not advance
`proper bases for granting a Request for Rehearing.
`In sum, Petitioner has the burden to show that the ’038 patent is
`eligible for post-grant review. See 37 C.F.R. § 42.20(c) (“The moving party
`has the burden of proof to establish that it is entitled to the requested relief”);
`35 U.S.C. § 326(e) (“In a post-grant review instituted under this chapter, the
`petitioner shall have the burden of proving a proposition of unpatentability
`by a preponderance of the evidence.”); see also Research Corp. Techs., Inc.
`v. Microsoft Corp., 627 F.3d 859, 870–71 (Fed. Cir. 2010) (holding that the
`patentee carries the burden to show entitlement to a priority date when the
`patentee relies on that priority date to overcome an anticipation or
`obviousness argument). We are not persuaded that the Petition carried this
`burden.
`
`CONCLUSION
`For the foregoing reasons, Petitioner’s Request for Rehearing is denied.
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`PGR2017-00009
`Patent 9,398,038 B2
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`PETITIONER:
`
`Mark Knedeisen
`Patrick McElhinny
`Lauren Murray
`K&L GATES, LLP
`mark.knedeisen@klgates.com
`patrick.mcelhinny@klgates.com
`lauren.murray@klgates.com
`
`PATENT OWNER:
`
`Mehran Arjomand
`Erol Basol
`MORRISON & FOERSTER LLP
`marjomand@mofo.com
`ebasol@mofo.com
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